Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

NONFINAL OFFICE ACTION

 

The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned.  Respond using the Trademark Electronic Application System (TEAS).  A link to the appropriate TEAS response form appears at the end of this Office action. 

 

Issue date:  December 21, 2019

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

The trademark examining attorney has searched the Office’s database of registered and pending marks and has found no conflicting marks that would bar registration under Trademark Act Section 2(d).  TMEP §704.02; see 15 U.S.C. §1052(d).

 

SUMMARY OF ISSUES:

 

• Section 2(e)(1) Merely Descriptive Refusal
• Identification of Goods/Services Requirement
• Basis Advisory

 

SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE

Registration is refused because the applied-for mark merely describes a feature and of applicant’s goods and/or services. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.

 

A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s goods and/or services.  TMEP §1209.01(b); see, e.g., In re TriVita, Inc., 783 F.3d 872, 874, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005) (citing Estate of P.D. Beckwith, Inc. v. Comm’r of Patents, 252 U.S. 538, 543 (1920)). 

 

The applied-for mark is FLEET LTE for a bevy of goods/services which monitor/track/report on the status of various fleet using lte networks. See attached evidence regarding the meaning of “LTE” as a well-known abbreviation for “long term evolution,” a “4G wireless communications standard” that is “designed to provide up to 10x the speeds of 3G networks…” – also see the attached evidence from applicant’s press release.

 

Generally, if the individual components of a mark retain their descriptive meaning in relation to the goods and/or services, the combination results in a composite mark that is itself descriptive and not registrable.  In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1516 (TTAB 2016) (citing In re Tower Tech, Inc., 64 USPQ2d 1314, 1317-18 (TTAB (2002)); TMEP §1209.03(d); see, e.g., Apollo Med. Extrusion Techs., Inc. v. Med. Extrusion Techs., Inc., 123 USPQ2d 1844, 1851 (TTAB 2017) (holding MEDICAL EXTRUSION TECHNOLOGIES merely descriptive of medical extrusion goods produced by employing medical extrusion technologies); In re Cannon Safe, Inc., 116 USPQ2d 1348, 1351 (TTAB 2015) (holding SMART SERIES merely descriptive of metal gun safes); In re King Koil Licensing Co., 79 USPQ2d 1048, 1052 (TTAB 2006) (holding THE BREATHABLE MATTRESS merely descriptive of beds, mattresses, box springs, and pillows). 

 

Only where the combination of descriptive terms creates a unitary mark with a unique, incongruous, or otherwise nondescriptive meaning in relation to the goods and/or services is the combined mark registrable.  See In re Colonial Stores, Inc., 394 F.2d 549, 551, 157 USPQ 382, 384 (C.C.P.A. 1968); In re Positec Grp. Ltd., 108 USPQ2d 1161, 1162-63 (TTAB 2013).

 

In this case, both the individual components and the composite result are descriptive of applicant’s goods and/or services and do not create a unique, incongruous, or nondescriptive meaning in relation to the goods and/or services.  Specifically, applicant’s goods/services function to monitor fleets using LTE technology.

 

In light of the foregoing, registration is refused pursuant to Section 2(e)(1) of the Trademark Act.

 

SUPPLEMENTAL REGISTER

 

The applied-for mark has been refused registration on the Principal Register.  Applicant may respond to the refusal by submitting evidence and arguments in support of registration and/or by amending the application to seek registration on the Supplemental Register.  See 15 U.S.C. §1091; 37 C.F.R. §§2.47, 2.75(a); TMEP §§801.02(b), 816.  Amending to the Supplemental Register does not preclude applicant from submitting evidence and arguments against the refusal(s).  TMEP §816.04.

 

DISCLAIMER ADVISORY

 

Applicant is advised that, if the application is amended to seek registration on the Principal Register under Trademark Act Section 2(f) or on the Supplemental Register, applicant will be required to disclaim “LTE” because such wording appears to be generic in the context of applicant’s goods and/or services.  See 15 U.S.C. §1056(a); In re Wella Corp., 565 F.2d 143, 144, 196 USPQ 7, 8 (C.C.P.A. 1977); In re Creative Goldsmiths of Wash., Inc., 229 USPQ 766, 768 (TTAB 1986); TMEP §1213.03(b).

 

Applicant may submit a disclaimer in the following format:

 

No claim is made to the exclusive right to use “LTE” apart from the mark as shown.

 

TMEP §1213.08(a)(i).

 

For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration. However, if applicant responds to the refusal, applicant must also respond to the requirements set forth below.

 

IDENTIFICATION OF GOODS/SERVICES

 

International Class 9

 

Applicant’s identification of Satellite telecommunications apparatus, instruments and systems for maritime use, namely, satellite communications terminals, telephone and facsimile apparatus and instruments, computer terminals and keyboards, visual display units, antennae, mobile internet equipment and apparatus, modems, routers, advanced satellite modems and computer software; satellite tracking and positioning systems for maritime use; computer software programs for the operation and management of maritime satellite communication systems; parts and fittings for all the aforesaid goods must be clarified because it is too broad and could include goods/services in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, this wording could encompass downloadable computer software in International Class 9 and/or non-downloadable software in International Class 42. Moreover, tn the identification of goods, applicant must use the common commercial or generic names for the goods, be as complete and specific as possible, and avoid the use of indefinite words and phrases.  TMEP §1402.03(a); see 37 C.F.R. §2.32(a)(6).  If applicant uses indefinite words such as “apparatus,” “components,” “devices,” “materials,” or “parts,” such wording must be followed by “namely,” and a list of each specific product identified by its common commercial or generic name.  See TMEP §§1401.05(d), 1402.03(a).

 

International Class 38

 

Applicant’s identification of Maritime telephone communications services and maritime satellite telecommunications services, namely, telephone services, electronic mail services,voice and data transmission services, facsimile services, provision of user access to the internet and other online systems, radio satellite ship to shore telecommunication services, communication services to enable online, real-time engagement between internet users and content providers, computer aided transmission of messages and images, and leasing and sub-leasing bandwidth and uplink services; telecommunication of information, to third parties to allow tracking and location of third party maritime assets, cargoes and personnel must be amended because it is indefinite. Applicant must further enumerate the services being identified, as exemplified in the suggested amendments below. See TMEP §§1402.01, 1402.03.

 

International Class 39

 

Applicant’s identification of Tracking and locating maritime vessels, objects and cargoes by means of satellite technology for third parties and making available information in electronic form; provision of maritime tracking and positioning services and systems must be clarified because it is too broad and could include services in other international classes. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  In particular, this wording could encompass tracking, locating and monitoring of maritime vessels and cargo vessels by means of satellite technology for third parties for commercial purposes in International Class 35 and/or global positioning systems in International Class 9.

 

International Class 42

Applicant’s identification of design and development of computer firmware, computer software, computer systems, computer infrastructures for the operation of satellite communication and telecommunication equipment and management of satellite communication and telecommunication services is acceptable as currently identified and classified in International Class 42.

However, applicant’s identification of Design and development of systems, apparatus and instruments for the provision of telecommunication and satellite communications; design and development of telecommunications and satellite communications apparatus and equipment, including mobile telecommunications and satellite communications devices; design and development of tracking and positioning equipment and services; development of industry standards and procedures; technical support services for telecommunication and satellite communication systems, apparatus and instruments and associated computer software and firmware; technical support services for satellite communication and telecommunication equipment and services, including mobile telecommunications and satellite communications devices; satellite control services; technical evaluation and testing of satellite communications equipment; information, consultancy and advice relating to the aforesaid; all the aforesaid services relating to or for use in satellite communications, satellite operations and satellite applications must be amended because it is indefinite. Applicant must further enumerate the services being identified, as exemplified in the suggested amendments below. See TMEP §§1402.01, 1402.03.

 

Suggested Amendments

 

The USPTO has the discretion to determine the degree of particularity needed to clearly identify goods and/or services covered by a mark.  In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d 1593, 1597 (TTAB 2014) (citing In re Omega SA, 494 F.3d 1362, 1365, 83 USPQ2d 1541, 1543-44 (Fed. Cir. 2007)).  Accordingly, the USPTO requires the description of goods and/or services in a U.S. application to be specific, definite, clear, accurate, and concise.  TMEP §1402.01; see In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d at 1597-98; Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954). 

 

Applicant may substitute the following wording, if accurate:

 

International Class 9: Satellite telecommunications apparatus, instruments and systems for maritime use, namely, satellite communications terminals; Satellite telecommunications apparatus, instruments and systems for maritime use, namely, telephone and facsimile apparatus and instruments, namely, {specify goods in International Class 9}; Satellite telecommunications apparatus, instruments and systems for maritime use, namely,  computer terminals and keyboards; Satellite telecommunications apparatus, instruments and systems for maritime use, namely, visual display units, namely {specify goods in International Class 9}; Satellite telecommunications apparatus, instruments and systems for maritime use, namely, antennae; Satellite telecommunications apparatus, instruments and systems for maritime use, namely, mobile internet equipment and apparatus, namely, modems, routers, advanced satellite modems; downloadable computer software for {specify function of the software, e.g., use as a spreadsheet, word processing, etc., and, if software is content or field specific, the content or field of use}; satellite tracking and positioning systems for maritime use, namely {specify the systems referenced within the realm of International Class 9}; downloadable computer software programs for the operation and management of maritime satellite communication systems; parts and fittings for all the aforesaid goods; global positioning systems.

 

International Class 35: Tracking, locating and monitoring of maritime vessels and cargo vessels by means of satellite technology for third parties for commercial purposes.

 

International Class 38: Maritime telephone communications services and maritime satellite telecommunications services, namely, telephone services, transmission of electronic mail, electronic transmission of voice and data, facsimile transmission services, provision of user access to the internet and other online systems, radio satellite ship to shore telecommunication services, communication services to enable online, real-time engagement between internet users and content providers, computer aided transmission of messages and images, and leasing and sub-leasing bandwidth and uplink services; telecommunication of information, namely transmission of information to third parties to allow tracking and location of third party maritime assets, cargoes and personnel.

 

International Class 42: Providing a website featuring non-downloadable software for computer software programs for the operation and management of maritime satellite communication systems; design and development of computer firmware, computer software, computer systems, computer infrastructures for the operation of satellite communication and telecommunication equipment and management of satellite communication and telecommunication services; Design and development of systems, apparatus and instruments for the provision of telecommunication and satellite communications, namely {specify apparatus and instruments within the realm of International Class 42}; design and development of telecommunications and satellite communications apparatus and equipment, namely, {specify the mobile telecommunications and satellite communications devices}; design and development of tracking and positioning equipment, namely {specify equipment}; developing accreditation standards for {indicate type of organization or nature of services} to the order and specification of others; technical support services for telecommunication and satellite communication systems, apparatus and instruments and associated computer software and firmware, namely {specify services within the realm of International Class 42}; technical support services for satellite communication and telecommunication equipment and services, namely {specify mobile telecommunications and satellite communications devices}; satellite control services, namely {specify services within the realm of International Class 42}; technical evaluation and testing of satellite communications equipment, namely {specify services and equipment within the realm of International Class 42}; all the aforesaid services relating to or for use in satellite communications, satellite operations and satellite applications.

 

Advisory

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

 

Effective January 1, 2019, a new version of the Nice Agreement Eleventh Edition changed the classification of certain goods and services.  See Nice Classification, 11th ed., version 2019 (Nice 11-2019).  Applications filed on or after January 1, 2019 must comply with this new version.  See 37 C.F.R. §2.85(e)(1); TMEP §1401.09.  Applications filed prior to January 1, 2019 must comply with the edition/version of the Nice Agreement in effect as of the application filing date; however, applicants of such applications can choose to comply with the new version.  See 37 C.F.R. §2.85(e)(1)-(2); TMEP §1401.09.  If applicant chooses to comply with the new version, the entire identification must comply with this version.  See 37 C.F.R. §2.85(e)(2); TMEP §1401.09.  The USPTO’s online U.S. Acceptable Identification of Goods and Services Manual provides classification information for the new version as well as information for previous editions/versions in notes to specific entries.  See TMEP §1402.04.

 

OPTION TO DELETE SECTION 1(b) BASIS

 

The application specifies both an intent to use basis under Trademark Act Section 1(b) and reliance on a foreign registration(s) under Section 44(e).  See 15 U.S.C. §§1051(b), 1126(e); 37 C.F.R. §2.34(a)(2)-(3).  However, the foreign registration alone may serve as a basis for obtaining a U.S. registration.  See 37 C.F.R. §2.34(a)(3); TMEP §806.01(d).  If applicant wants to rely solely on the foreign registration under Section 44(e) as the basis, applicant can request deletion of the Section 1(b) basis.  See 37 C.F.R. §2.35(b)(1); TMEP §806.04. 

 

Unless applicant indicates otherwise, the USPTO will presume that applicant is relying on both Sections 1(b) and 44(e).  Thus, although the mark may be approved for publication, it will not register until an acceptable allegation of use has been filed for the goods and/or services based on Section 1(b).

 

RESPONSE GUIDELINES 

 

Response guidelines.  For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  For a requirement, applicant should set forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE:  Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application.  See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820.  TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services.  37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04.  However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.  

 

How to respond.  Click to file a response to this nonfinal Office action.    

 

/Brittney Cogan/

Examining Attorney

Law Office 114

(571) 272-7973

brittney.cogan@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on December 21, 2019 for

U.S. Trademark Application Serial No. 88694831

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Brittney Cogan/

Examining Attorney

Law Office 114

(571) 272-7973

brittney.cogan@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from December 21, 2019, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”